The IPKat visits INTA 2: do trade mark attorneys really matter?

Experience is almost as
important as qualifications,
in the long run

Does the success of a trade mark application depend on whether the applicant instructs a professional trade mark attorney and, if so, to what extent? These questions lay at the heart of some fascinating research in progress from Deborah Gerhardt and Jon P. McClanahan (both of the UNC School of Law, United States). Using a vast database of statistics from the United States Patent and Trademark Office (USPTO), Deborah and Jon examined and contrasted filings by pro se applicants and those in which legal assistance was engaged between 1984 and 2012, contrasting their success rates in terms of getting as far as publication -- where objections from the USPTO might be encountered -- and grant, by which time third-party challenges might have to be met.

In short, the figures offered by Deborah and Jon show that, in general, attorney-represented applications fare better at both stages, but that experience is also important: between non-attorneys such as skilled paralegals filing 30 or more applications and their legally qualified counterparts, the success rate of the latter is only marginally higher.

The study takes into account the various changes in US law and practice, including the shift towards allowing intent-to-file applications, and  market effects such as the dotcom bubble.  The success rates of applications from applicants who took both pro se and attorney routes is also addressed.

This Kat hugely looks forward to the publication of this piece in 17 STAN. TECH. L. REV. (abstract here).